Ex Parte Lovelett et al

Patent Trial and Appeal BoardAug 27, 2013

11751887 (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/751,887 05/22/2007 John M. Lovelett P00162-US-UTIL 2787 98665 7590 08/28/2013 Otterstedt, Ellenbogen & Kammer, LLP P.O Box 381 Cox Cob, CT 06807 EXAMINER ANDERSON, JOHN A ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 08/28/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte JOHN M. LOVELETT, SHARI KRIKORIAN, 7 EDWARD F. DOWNS, JULIE KRAMER, ALICIA CAVALLARO, 8 GEORGE DAMIANOV, BEZA LEMMA and VIMAL SINGH 9 ___________ 10 11 Appeal 2011-007566 12 Application 11/751,887 13 Technology Center 3600 14 ___________ 15 16 17 Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and 18 THOMAS F. SMEGAL, Administrative Patent Judges. 19 SMEGAL, Administrative Patent Judge. 20 21 DECISION ON APPEAL 22 Appeal 2011-007566 Application 11/751,887 2 STATEMENT OF THE CASE1 1 John M. Lovelett, Shari Krikorian, Edward F. Downs, Julie Kramer, 2 Alicia Cavallaro, George Damianov, Beza Lemma and Vimal Singh 3 (Appellants) seek review under 35 U.S.C. § 134 of a non-final rejection of 4 claims 1, 2 and 4-50, the only claims pending in the application on appeal. 5 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 6 SUMMARY OF DECISION 7 We REVERSE. 8 THE INVENTION 9 The Appellants invented electronic payment systems and methods 10 (Specification 1: ll. 11-12). 11 An understanding of the invention can be derived from a reading of 12 exemplary claim 1 which is reproduced below. 13 1. A method for electronic payment, comprising the steps of: 14 providing a system, wherein said system comprises a tangible 15 computer readable recordable storage medium embodying: 16 distinct software modules comprising: 17 a transaction engine module; and 18 a payment server module; 19 a buyer registry; and 20 a supplier registry; 21 facilitating an entity obtaining a single payment file from 22 a buyer, said single file comprising data specifying both: (i) a 23 first form of payment from said buyer to a first biller and (ii) a 24 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed October 26, 2010) and Reply Brief (“Reply Br.,” filed March 1, 2011), and the Examiner’s Answer (“Ans.,” mailed January 4, 2011). Appeal 2011-007566 Application 11/751,887 3 second form of payment, different than said first form of 1 payment, from said buyer to a second biller, said entity being 2 separate from said buyer, said first biller, and said second biller, 3 said entity obtaining said single payment file by receiving said 4 file using said payment server module executing on a hardware 5 processor; 6 facilitating said entity appending first stored data, from 7 said supplier registry, to said data specifying said first form of 8 payment to said first biller, to effectuate payment to said first 9 biller by said first form of payment, said appending of said first 10 stored data being carried out by said transaction engine module 11 executing on said hardware processor; and 12 facilitating said entity appending second stored data, 13 from said buyer registry, to said data specifying said second 14 form of payment to said second biller, to effectuate payment to 15 said second biller by said second form of payment, said 16 appending of said second stored data being carried out by said 17 transaction engine module executing on said hardware 18 processor. 19 The Examiner relies upon the following prior art: 20 Barnes US 5,970,475 Oct. 19, 1999 21 Doran US 2005/0038739 A1 Feb. 17, 2005 22 Ginter US 2008/0021835 A1 Jan. 24, 2008 23 Erbey US 2008/0208707 A1 Aug. 28, 2008 24 REJECTIONS 25 The following rejections were included in the final rejection and are 26 before us for review: 27 I. Claims 1, 2, 4, 6-10, 29 and 38-41 are rejected under 35 U.S.C. 28 §102 (b) as being anticipated by Barnes. 29 Appeal 2011-007566 Application 11/751,887 4 II. Claim 5 is rejected under 35 U.S.C. § l03 (a) as being 1 unpatentable over Barnes in view of Erbey. 2 III. Claims 11-28, 30-37 and 42 are rejected under 35 U.S.C. §103 (a) 3 as being unpatentable over Barnes in view of Ginter. 4 IV. Claims 43 and 44 are rejected under 35 U.S.C. §103 (a) as being 5 unpatentable over Barnes in view of Erbey and further in view of 6 Ginter. 7 V. Claims 45-50 are rejected under 35 U.S.C. § 103(a) as being 8 unpatentable over Barnes in view of Doran. 9 10 FINDINGS OF FACT 11 We find that the findings of fact, which appear in the Analysis below, 12 are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 13 Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 14 evidentiary standard for proceedings before the Office). 15 ANALYSIS 16 The rejection of claims 1, 2, 4, 6-10, 29 and 38-41 under 35 U.S.C. 17 §102(b) as being anticipated by Barnes. 18 Claims 1, 2, 4, 6-10, 29 and 38-40 19 Independent claims 1, 6 and 38-40 each require in one form or 20 another, 21 “facilitating an entity obtaining a single payment file……from a 22 buyer,….said single file comprising data specifying both: (i) a first 23 form of payment from said buyer to a first biller and (ii) a second 24 form of payment, different than said first form of payment, from said 25 Appeal 2011-007566 Application 11/751,887 5 buyer to a second biller, said entity being separate from…. said buyer, 1 said first biller, and said second biller, …. 2 We are persuaded by Appellants’ arguments that the Examiner failed 3 to establish a prima facie showing of anticipation in rejecting claims 1, 2, 4, 4 6-10, 29 and 38-40 over Barnes. Barnes does not teach facilitating an entity 5 obtaining a single payment file from a buyer, where the single file comprises 6 data specifying both a first form of payment to a first biller and a second 7 form of payment-“different than said first form of payment”-to a second 8 biller (App. Br. 13-17). 9 In particular, the Examiner’s reliance on Column 6, ll. 29-32 of 10 Barnes (Ans. 5) is misplaced because the referenced portion states: “normal 11 wire transfers 22 may be made from the Buyer's Bank 18 to the Seller's Bank 12 20, advise or confirmation of payment may also be made through the 13 Internet to the Seller 16.” We find that ‘confirmation of payment’ is not a 14 transaction corresponding to a second form of payment to a second biller 15 because the confirmation is merely a communication memorializing the 16 transaction done in the first form of payment, namely, by wire transfer. 17 [U]nless a reference discloses within the four corners of the document 18 not only all of the limitations claimed but also all of the limitations arranged 19 or combined in the same way as recited in the claim, it cannot be said to 20 prove prior invention of the thing claimed and, thus, cannot anticipate under 21 35 U.S. C. § 102. Net MoneyIn, Inc, v. VeriSign, Inc., U.S.C. 545 F.3d 1359, 22 1371 (Fed. Cir. 2008). 23 24 25 Appeal 2011-007566 Application 11/751,887 6 Independent Claim 41 1 While the Examiner contends at page 29 of the Answer that the 2 “Claim 41 rejection remains identical to claim 1”, independent claim 41 3 does not contain the limitations discussed above. Thus, Appellants’ 4 arguments intended to cover claim 41 are not applicable. That said, claim 41 5 also differs from claim 1 in reciting ‘facilitating obtaining payment 6 instructions’ and ‘facilitating appending first storage data’, both process 7 steps being performed by a payment service operator (emphasis added). The 8 Examiner has provided no reasoning supporting where such separate and 9 distinct limitations are found in Barnes (Ans. 29-30). 10 Furthermore, we find error with the Examiner’s statement at page 29 11 of the Answer that “The inclusion of identification number in claim 41 is old 12 and well known standard operating protocol for electronic funds transfer”, 13 because the rejection at hand is an anticipation rejection and the “old and 14 well known” standard applies to a rejection based on obviousness under 15 §103. 16 For the foregoing reasons, we reverse the Examiner’s rejection of 17 claims 1, 2, 4, 6-10, 29 and 38-41 as being anticipated by Barnes. 18 19 The rejection of claim 5 under 35 U.S.C. § l03 (a) as being 20 unpatentable over Barnes in view of Erbey. 21 This rejection is directed to dependent claim 5 which depends 22 indirectly from claim 1. We reverse the rejection of claim 1 above and thus 23 will not sustain the rejection of claim 5 over the cited prior art. Cf. In re 24 Fritch, 972 F. 2d 1260, 1266 (Fed. Cir. 1992) (Dependent claims are 25 Appeal 2011-007566 Application 11/751,887 7 nonobvious if the independent claims from which they depend are 1 nonobvious.”) 2 The rejection of claims 11-28, 30-37 and 42 under 35 U.S.C. §103(a) 3 as being unpatentable over Barnes in view of Ginter. 4 This rejection is directed to dependent claims 11-28, 30-37 and 42, 5 which either depend indirectly from claim 1 or directly from claim 41. We 6 reverse the rejection of claims 1 and 41 above and thus will not sustain the 7 rejection of claims 11-28, 30-37 and 42 over the cited priorart. Cf. In re 8 Fritch, 972 F. 2d 1260, 1266 (Fed. Cir. 1992) (Dependent claims are 9 nonobvious if the independent claims from which they depend are 10 nonobvious.”) 11 The rejection of claims 43 and 44 under 35 U.S.C. § l03 (a) as being 12 unpatentable over Barnes in view of Erbey and further in view of Ginter. 13 This rejection is directed to dependent claims 43 and 44 which depend 14 indirectly from claim 1. We reverse the rejection of claim 1 above and thus 15 will not sustain the rejection of claims 43 and 44 over the cited prior art. Cf. 16 In re Fritch, 972 F. 2d 1260, 1266 (Fed. Cir. 1992) (Dependent claims are 17 nonobvious if the independent claims from which they depend are 18 nonobvious.”) 19 20 The rejection of claims 45-50 under 35 U.S.C. § 103(a) as being 21 unpatentable over Barnes in view of Doran. 22 23 This rejection is directed to dependent claims 45-50 which depend 24 either directly or indirectly from claims 1, 6 and 38-41. We reverse the 25 rejections of claims 1, 6 and 38-41 above and thus will not sustain the 26 Appeal 2011-007566 Application 11/751,887 8 rejection of claims 45-50 over the cited prior art. Cf. In re Fritch, 972 F. 2d 1 1260, 1266 (Fed. Cir. 1992) (Dependent claims are nonobvious if the 2 independent claims from which they depend are nonobvious.”) 3 DECISION 4 The rejections of claims 1, 2 and 4-50 are reversed. 5 6 REVERSED 7 8 ke 9 10 11 12